Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 24
`Date: October 3, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`MICROSOFT CORP. and APPLE INC.,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`____________
`
`Case IPR2014-004041
`Patent 7,987,274 B2
`____________
`
`
`Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and STEPHEN C. SIU,
`Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`1 Case IPR2014-00483 has been joined with Case IPR2014-00403
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 24
`Date: October 3, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`MICROSOFT CORP. and APPLE INC.,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`____________
`
`Case IPR2014-004041
`Patent 7,987,274 B2
`____________
`
`
`Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and STEPHEN C. SIU,
`Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`1 Case IPR2014-00483 has been joined with Case IPR2014-00403
`
`
`
`IPR2014-00403
`Patent 7,987,274 B2
`
`I.
`
`BACKGROUND
`
`
`
`
`
`VirnetX, Inc. (“Patent Owner”), in its Request for Rehearing (“Req.” or
`
`“Request”), seeks reversal of the Board’s decision in IPR2014-00483 to institute
`
`an inter partes review of claims 1–5, 7, 8, 10, 12, 15, and 17 of U.S. Patent
`
`7,987,274 B2 (“the ’274 Patent,” Ex. 1001) and to join IPR2014-00483 with the
`
`instant proceeding. See Paper 22, 1 (“Req. Reh’g.”). For the reasons that follow,
`
`the Board denies the requested relief.
`
`The applicable standard for a request for rehearing is set forth in 37 C.F.R.
`
`§ 42.71(d), which provides in relevant part:
`
`A party dissatisfied with a decision may file a request for rehearing,
`without prior authorization from the Board. The burden of showing a
`decision should be modified lies with the party challenging the
`decision. The request must specifically identify all matters the party
`believes the Board misapprehended or overlooked, and the place
`where each matter was previously addressed in a motion, opposition,
`or a reply.
`
`
`
`II. DISCUSSION
`
`Patent Owner argues “that Apple’s petition relies heavily on an expert
`
`declaration that makes no mention of the ’274 patent or how Provino applies to the
`
`’274 Patent.” Req. Reh’g 4–5. Patent Owner also maintains that the Board abused
`
`its discretion because it “incorporate[d]” its analysis from IPR2014-00403, and the
`
`Board prejudiced Patent Owner by joining the two proceedings. Id. at 4.
`
`Patent Owner has not shown an abuse of discretion or an overlooked
`
`material point. The declarant in the ’483 IPR discusses Provino at length, Ex. 1011
`
`¶¶ 26–39, discusses the grandparent application to the ’274 patent, id. ¶¶ 11–25
`
`(grandparent U.S. Patent No. 7,188,180), and also describes how Provino discloses
`
`an “access request message[],” which claim 1 of the ’274 Patent recites. Ex. 1011
`
`2
`
`
`
`
`IPR2014-00403
`Patent 7,987,274 B2
`
`
`¶ 40. Patent Owner does not allege that the grandparent patent specification
`
`
`
`discussed by the declarant in the ’484 IPR materially differs from the ’274 Patent
`
`Specification.
`
`In addition, Petitioner proposes grounds of unpatentability for claims 1–4, 7,
`
`8, 10, 12, 15, and 17 as anticipated by Provino, and includes claim charts mapping
`
`specific citations of Provino to claim limitations recited in the ’274 patent. See,
`
`e.g., ’483 IPR, Pet. 17–33. Petitioner provides similar arguments with respect to
`
`Provino in combination with other references. See, e.g., Pet. 34–40. Patent Owner
`
`does not explain persuasively how we overlooked a point in ’483 IPR Petition that
`
`would render institution and joinder deficient.
`
`Patent Owner also argues that the Petition in the ’483 IPR is defective as
`
`lacking “explanation and particularity required by 35 U.S.C. §§ 312(a)(3)-(4) and
`
`37 C.F.R. §§ 42.104(b)(4)-(5).” Req. Reh’g 5. However, Patent Owner does not
`
`specify a claim element missing from the showing. Patent Owner maintains that
`
`“Apple at least fails to explain why Provino’s discussion of ‘generating message
`
`packets’ allegedly discloses the ‘access request message’ of claim 1.” Id. at 7.
`
`Patent Owner similarly alleges that that “none of these issues was addressed in the
`
`Board’s Decision instituting Apple’s petition.” Req. Reh’g. 8. Contrary to Patent
`
`Owner’s contentions, as noted above, the declarant in the ’483 IPR discusses the
`
`claim element. ’483 IPR, Ex. 1011 ¶ 40. Petitioner Apple and Microsoft each rely
`
`on Provino as disclosing the element. ’483 IPR Pet. 36; ’403 IPR, Pet. 37–39. The
`
`’IPR 483 Institution Decision addresses it by incorporating the “previous analysis”
`
`from the ’403 Institution Decision. See’403 IPR, Paper 13, 16–17; ’483 IPR, Paper
`
`6, 6.
`
`Patent Owner also argues that our incorporation of the ’403 IPR Institution
`
`Decision into the ’483 IPR analysis is improper because “Apple’s contentions
`
`3
`
`
`
`
`IPR2014-00403
`Patent 7,987,274 B2
`
`
`regarding Provino are different than Microsoft’s contentions at least because
`
`
`
`Apple’s contentions are supported by a different expert declaration for a different
`
`patent.” Req. Reh’g 9. Patent Owner also argues that joinder would be prejudicial
`
`because Patent Owner would need to “address two different expert declarations.”
`
`Id. at 11–12. Patent Owner does not point out material differences between the
`
`two declarations, which involve the same declarant, the same or similar
`
`specification, and the same prior art to Provino. Patent Owner also does not
`
`explain persuasively how a “different” declaration by the same expert covering the
`
`same or similar specification and prior art would amount to prejudice in one joined
`
`proceeding as compared to two separate proceedings.
`
`
`
`
`
`III. CONCLUSION
`
`Based on the foregoing discussion, Patent Owner’s requested relief for a
`
`reversal of the decision to join Apple and institute an inter partes review is denied
`
`because Patent Owner has not shown an overlooked or misapprehended material
`
`point.
`
`
`
`IV. ORDER
`
`
`
`
`
`
`
`
`
`
`
`For the reasons given, it is
`
`ORDERED that the Request for Rehearing is denied.
`
`
`
`
`
`4
`
`
`
`
`IPR2014-00403
`Patent 7,987,274 B2
`
`PETITIONER:
`
`
`
`
`
`W. Karl Renner
`Kevin E. Greene
`FISH & RICHARDSON P.C.
`axf@fr.com
`greene@fr.com
`
`Jeffrey Kushan
`Joseph Micallef
`SIDLEY AUSTIN LLP
`jkushan@sidley.com
`jmicallef@sidley.com
`
`
`PATENT OWNER:
`
`Joseph E. Palys
`Naveen Modi
`PAUL HASTINGS LLP
`josephpalys@paulhastings.com
`naveenmodi@paulhastings.com
`
`Jason E. Stach
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P.
`jason.stach@finnegan.com
`
`
`
`
`5
`
`
`
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